USPTO Patents Application 10723539

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

REMARKS /ARGUMENTS

Claims 1-18 are pending in the present application. Claim
18 has been cancelled. Claims 1-18 have been rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point and distinctly claim the subject matter
for which Applicant regards as the invention. Amendments as
suggested by the Examiner have been made to claims 1, 9, and 14
to overcome this rejection. Claims 1-3, 6 and 8 are rejected
under 35 U.S.C. § 102(b) as begin anticipated by Chen (U.S. Pat.
No. 5,826,719). Claims 1-4, 6 and 8 are rejected under 35
U.S.C. § 103(e) as being anticipated by Pangerc et al . (U.S.
Publ. No. 2004/0256265). Claims 1-4, 6 and 8 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Banck (U.S. Pat.
No. 2,265,336) in view of Mackie (U.S. Pat. No. 1,955,646).
Claims 1-3, 6 and 8 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen in view of Mackie. Claim 1-4, 6
and 8-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pangerc in view of Omata et al . (U.S. Pat. No.
6,247,595). Claims 5 and 7 are rejected under 35 U.S.C. §
103 (a) as being unpatentable over the art as applied to claims 1
and 6 and in further view of Huot Jr. et al . (U.S. Pat. No.
6,206,189). Claims 14-18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Banck in view of Mackie and Blasko et
al. (U.S. Pat. No. 5,228,590). Applicant sent this identical
amendment to the Examiner in response to a final office action
dated May 11, 2005. The Examiner did not enter this amendment
for purposes of appeal as it raised new issues that would
require further consideration or search. Applicant respectfully
traverses all rejections.

6

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

Independent claim 1 has been rejected under 35 U.S. C. § 102
as being anticipated by both Chen and Pangerc . Independent
claim 1 has also been rejected under 35 U.S.C. § 103 as being
unpatentable in view of multiple prior art combinations that
include Banck in view of Mackie; Chen in view of Mackie; and
Pangerc in view of Omata. In light of these multiple rejections
Applicant has amended claim 1 to describe the insert as having a
means for releasably securing the insert within the container
and also describes the plurality of apertures within the insert
as having slots that form a keyhole entry, sloped portions and
support members extending upwardly from the slots of the
plurality of apertures to facilitate holding punches. This
amendment gains its antecedent basis from original claims 9 and
10, and from page 4 lines 9-10. None of the references cited
against claim 1 teach an insert releasably within a container
that have a plurality of apertures that have slots that form a
keyhole entry, sloped portions and support members that extend
upwardly from the slots of the plurality of apertures.
Applicant will take each piece of prior art in turn.

The reference to Chen teaches an insert 2 0 that has
apertures, however, those apertures do not have support members
that extend upwardly from the slots to facilitate the holding of
punches. The apertures are merely within the insert 20 and
items can be placed therein.

Similarly, Pangerc does not teach a plurality of apertures
in an insert that has a plurality of apertures with slots
therein wherein support members extend upwardly from the slot of
the plurality of apertures to facilitate to holding punches.
Instead, Pangerc teaches a tool container with a bit holding
portion 62 having a bore 80. (Para. 20). Pangerc, however, does
not teach support members extending from the bores 80 and thus

7

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

does not meet all the limitations of amended claim 1.
Additionally, Pangerc does not teach that an insert has first
and second halves that are detachably joined together along a
vertical parting plane. Instead, the insert 62 is just a solid
body and does not separate.

The reference to Banck additionally does not teach an
insert that has first and second halves detachably joined nor
apertures having slots that form a keyhole entry, have sloped
portions, and support members that extend upwardly from the
slots of the plurality of apertures. Instead, Banck teaches an
insert that is a slide drawer 12 that has an open compartment.
This open compartment cannot be considered any of the identified
limitations and therefore Banck does not teach and every element
of the amended claim.

The reference to Mackie teaches a cigarette package that
has a door 8 that is pivotally attached to the container,
however, does not teach the use of an insert. Thus, Mackie does
not teach the newly amended claim 1 .

The reference to Omata teaches a flat tablet case having a
hinge cap 50 within its sidewall and also does not have an
insert. Thus, the amended claim is not anticipated by Omata.

Because the prior art references cited against claim 1
neither teach nor suggest an insert that has both two halves
that are detachably joined together in combination with a
plurality of apertures having slots that form a keyhole entry,
sloped portions and support members extending upwardly from the
slots of the plurality of apertures to facilitate holding
punches the amended claim 1 is not anticipated by the prior art
references. Additionally, a combination of these prior art
references would not result in the claimed invention. At the
very least the claimed combination would not have an insert with

8

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

a plurality of apertures having slots and support members
extending upwardly from the slots to facilitate holding punches.
For at least this reason amended claim 1 is considered novel and
non-obvious and thus in allowable form.

Even if the Examiner believes each and every limitation of
amended claim 1 is provided by the prior art, Applicant submits
that there is no motivation to combine all of these prior art
references as suggested by the Examiner in his 103 rejections
nor would there be motivation to combine these references with
other references to find amended claim 1 obvious. Specifically,
as argued in the previous office action several of the cited
prior art references are considered non analogous art by the
Applicant. Specifically, in the last office action the
Applicant argued: Claims 9-13 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Pangerc et al . in view of
Omata. The Applicant asserts that the Examiner has failed to
meet the burden of establishing a prima facie case of
obviousness because the Omata reference is not analogous art and
should not be considered in an obviousness analysis. The
reference relied upon by the Examiner must either be in the
field of the inventor's endeavor or reasonably pertinent to the
specific problem with which the inventor was involved. In re
Deminski , 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986).

Further, the Omata reference relied upon by the Examiner is
not in the Applicant's field of endeavor. When regarding the
field of endeavor, the present invention deals particularly with
a container for storing and transporting punches and dies. (Pg.
1, lines 16-17) . In contrast, the Omata reference is directed
toward a conventional case for carrying and dispensing
refreshing tablets. (Col. 1, lines 12-13). The Omata reference
is not directed toward nor does it discuss a container for

9

Application No. 10/723,539 Attorney Docket No. P06681USO

Reply to Final Office Action dated August 25, 2005

punches and dies. Consequently, the reference relied upon by
the Examiner is not in the field of the inventors' endeavor and
should not relied upon.

Further, the Omata reference is not reasonably pertinent to
the Applicant's problem. The Federal Circuit has clarified how
to determine whether a reference is reasonably pertinent to the
particular problem in which the endeavor was involved as
follows :

[a] reference is reasonably pertinent if ... it is
one which, because of the matter with which it deals,
logically would have commended itself to the
inventor's attention in considering his problem. ...
If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same
problem . ... [I] f it is directed to a different
purpose, the inventor would accordingly have had less
motivation or occasion to consider it.

In re Clay , 966 F.2d 656, 23 USPQ 2d 1058, 1060-61 (Fed. Cir.
1992). (Emphasis added); See also, MPEP § 2141.01(a). According
to the Applicant's specification, the purpose of the present
invention is to provide "a container that can securely hold the
punches and dies while at the same time ensure the cleanliness
of the equipment." (Pg. 1, lines 7-9). The purpose of the Omata
reference is to "provide an inexpensive, flat tablet case
comprising a relatively small number of parts and satisfactory
in usability." (Col. 22-26).

The Applicant's reference has a different purpose as
compared to that of the Omata reference. Specifically,
Applicant's reference is for providing a container that not only
securely holds punches and dies but also one that ensures
cleanliness of the equipment, whereas the Omata reference is for
providing an inexpensive, flat tablet case comprising a small
number of parts. Therefore, Omata solves a different problem

10

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

than the claimed invention. Consequently, one skilled in the
art would have less motivation or occasion to consider the
reference cited by the Examiner. Because the reference relied
upon by the Examiner is not in the field of the inventor's
endeavor and is not reasonably pertinent to the specific problem
with which the inventor was involved, the Omata reference is not
analogous and should not be considered in an obviousness
analysis .

Claims 14-18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Banck in view of Mackie and Blasko. Again,
Applicant asserts that the Examiner has failed to meet the
burden of establishing a prima facie case of obviousness because
the Mackie and Banck references are not analogous art and should
not be considered in an obviousness analysis. Specifically,
neither of these references relied upon by the Examiner are in
the field of the inventor's endeavor or reasonably pertinent to
the specific problem with which the inventor was involved. In
re Deminski , 230 USPQ 313, 315. The Banck and Mackie references
relied upon by the Examiner are not in the Applicant's field of
endeavor. When regarding the field of endeavor the present
invention deals particularly with a container for storing and
transporting punches and dies. (Pg. 1, lines 16-17) . In
contrast, the Banck reference is directed toward an improved
cigarette and match dispenser. (Col. 1, lines 1-2). The Mackie
reference is directed toward a cigarette package with an
improved structure. (Col. 1, lines 1-3) . Thus, Banck and Mackie
references are not directed toward nor do they discuss a
container for storing and transporting punches and dies.
Consequently, these references relied upon by the Examiner are
not in the field of the inventor's endeavor and should not be
relied upon.

11

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

The Banck and Mackie references likewise are not reasonably-
pertinent to Applicant's problem. According to Applicant's
specification, the purpose of the present invention is to
provide u a container that can securely hold the punches and dies
while at the same time ensure the cleanliness of the equipment" .
According to Banck, the device is "for the purpose of dispensing
cigarettes and matches." (Col. 1, lines 4-5). The purpose of
Mackie is to provide "means to permit vision of a portion of the
cigarettes within the package adjacent to the cigarette
discharge mechanism." Col. 1, lines 6-12).

The Applicant's reference has a different purpose as
compared to the Banck and Mackie references. Specifically, the
Applicant's reference is for a container that can securely hold
the punches and dies while at the same time ensure the
cleanliness of the equipment, whereas the Banck reference is for
providing a device that dispenses cigarettes and matches, and
the Mackie reference is for a means to permit vision of a
portion of the cigarettes with the package adjacent to the
cigarette discharge mechanism. Therefore, Banck and Mackie
solve different problems than the claimed invention.
Consequently, one skilled in the art would have less motivation
or occasion to consider the references cited by the Examiner.
Because the references relied upon by the Examiner are not in
the field of the inventor's endeavor and are not reasonably
pertinent to the specific problem with which the inventor is
involved, the Banck and Mackie references are not analogous and
should not be considered in an obviousness analysis.

Even if the Examiner, in light of these arguments, believes
that the Omata, Banck, and Mackie references are analogous art,
at the very least, because these references relied upon by the
Examiner are not in the field of the inventor's endeavor nor

12

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

reasonably pertinent to this specific problem with which the
inventor was involved, one skilled in the art would have less
motivation to consider these references when combining the prior
art . None of the prior art references cited by the Examiner
deal specifically with the problem of holding punches in an
upright position. A punch is a very specialized tool and the
reason for having the apertures having slots that form a keyhole
entry, sloped portions and support members extending upwardly
from the slots of the plurality of apertures is to specifically
facilitate the holding of the special tool that is a punch.
Because the problem of holding this specific tool in an upright
position is not present in any of the prior art references; the
motivation to combine multiple prior art references to form an
insert that facilitates holding punches is found in the
Applicant's specification. Thus, Applicant asserts that the
Examiner is using the Applicant's specification as a blueprint
to create the claimed device. For the reasons stated above
Applicant believes that the amendment to claim 1 overcomes all
of the Examiner's objections to claim 1. Additionally, claims
2-8 depend on claim 1 and for at least this reason are also
considered in allowable form.

Similarly, independent claim 9 has been amended such that
the insert of claim 9 contains all the limitations of the insert
of claim 1 and therefore this amendment to the claim overcomes
all 103 rejections. Claims 11-13 depend on claim 9 and for at
least this reason are also considered in allowable form.

Claims 14-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Banck in view of Mackie. Claim 18 is
partially amended into claim 14 and has thus been cancelled.
Applicant has amended claim 14 to add the limitations of
"wherein each housing has a lid that has notches therein and a

13

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

bottom having protrusions that extend downwardly from the bottom
wall such that the notches on the lid of the housing receive the
protrusions from another housing to facilitate stacking of one
container on top of another; and wherein at least one housing
has dowels that extend outwardly from the sidewall of the
housing that are received by openings in the sidewall of another
housing." This amendment gains its antecedent basis from page
5, lines 32-35 that states "likewise, notches 28 on the lid 24
are of one housing 12 receive the protrusions 22 of another
housing can facilitate stacking of one container on top of
another," and from page 4, lines 19-25 that states "while the
housings 12 can be joined in any conventional manner, preferred
is the use of a clasp and a pair of dowels 78 that extend
outwardly from the sidewall 14 of a housing 12. The clasp 76 is
received in a retaining slot 80 located on the sidewall 14 of a
separate housing 12 and the dowel 78 are received in openings
82." Thus, no new matter has been added to claim 14.

Neither Mackie nor Blasko teaches these connections.
Specifically, Mackie is merely a cigarette package and does not
teach a manner in which other cigarette packages can be attached
to other cigarette packages. The reference to Blasko teaches
the interlocking of cartons that is accomplished by a pin in
corresponding positioned holes or a track and rail, or a mortise
and tenon, however, Blasko does not teach a lid element that has
notches thereon to receive protrusions of a bottom surface of
the carton. (Col. 4, lines 45-50). Therefore, the combination of
Blasko and Mackie would not provide a device with a lid having
notches therein so that a second item could be stacked on top of
the first item. Thus, each and every limitation is not met and
the obvious rejection is considered overcome.

14

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

Even if the Examiner considers each and every limitation of
the claimed invention present as argued above, Applicant still
asserts that Mackie is not analogous art. Additionally, even if
Mackie is analogous art, at the very least, there would be less
motivation of one skilled in the art to combine Mackie with
Blasko to arrive at the claimed invention. Thus, because there
is no motivation to combine the prior art references,
Application believes the rejection overcome. Claims 15-17
depend on claim 14 and for at least this reason are also
considered in allowable form.

In view of the above remarks and arguments, Applicant
believes that claims 1-17 are in condition for allowance and
Applicant respectfully requests allowance of such claims.

If any issues remain that may be expeditiously addressed in
a telephone interview, the Examiner is encouraged to telephone
the undersigned at 515/558-0200.

All fees or extensions of time believed to be due in
connection with this response are attached hereto; however,
consider this a request for any extension inadvertently omitted,
and charge any additional fees to Deposit Account 50-2098.

CONCLUSION

Respectfully submitted,

Timothy J. Zarley
Reg. No. 45,253
ZARLEY LAW FIRM, P.L.C
Capital Square

400 Locust Street, Suite 200
Des Moines, IA 50309-2350
Phone No. (515) 558-0200

15

Application No. 10/723,539 Attorney Docket No. P06681US0

Reply to Final Office Action dated August 25, 2005

- JLH/bjs

Fax No. (515) 558-7790
Customer No. 34082
Attorneys of Record

16